Presented by
Management Forum

Effective Defence of EPO Patent Applications

Clarity in drafting patent applications has always been a serious issue. The purpose of the seminar is to teach delegates the essentials of clarity, and the most effective use of the problem-solution approach, giving delegates an edge over other parties. *INCLUDES: Interactive workshop sessions and details of the latest case law and its implications*

29 Nov 2021 + 2 more dates

Enrol now

  • Format: Live online
  • CPD: 6 hours for your records
  • Certificate of completion

Why you should attend

Clarity in drafting patent claims has always been a serious issue: clarity is required to distinguish the subject matter of a claim from prior art, and an unclear claim can be interpreted to the disadvantage of the applicant or proprietor. This is not just a formal matter, but a substantial issue of first importance.

The ‘problem-solution’ approach is not officially part of the EPC, but is a criterion which has been developed by case law. It is now hard to find a decision of the Boards of Appeal which does not rely on the problem-solution approach in order to decide upon inventive step. It looks easy, but when applied, it should be applied correctly.

The purpose of this seminar is to teach delegates the essentials of clarity and the most effective use of the problem-solution approach, giving them an edge over other parties.

Key topics covered:
  • Article 84 – the implications of clarity of claims
  • Effective use of the problem-solution approach
  • Article 56 – understanding inventive step

Who should attend?

  • European patent attorneys
  • Patent attorneys in private practice
  • Corporate patent attorneys and lawyers
  • People working or training in intellectual property
  • US attorneys working in Europe
  • Trainee patent attorneys
  • EQE candidates

Those already familiar with the field will find these seminars valuable for updating their knowledge on the latest case law and its implications.

Course programme

Understanding the implications of clarity of claims – Article 84

  • Definition of clarity – Art 84
  • Categories and types of claims
  • Practical definition of clarity – clear means
  • Conciseness and support by description
  • Form and content of claims
  • Clarity vs novelty
  • Structural vs functional features
  • Comprising vs consisting
  • The interplay between Art 83, 84 and 56
  • Relative terms
  • Inventions defined by parameters
  • Definition by result to be achieved
  • Sources of difficulties with Article 84 – illustrating case law
  • Clarity of claims in opposition procedure
  • Application of G 3/14 to amended claims
  • Adaptation of the description

PRACTICAL WORKSHOP: Exercises to exemplify the concepts learnt

Inventive step and how to master the problem-solution approach – Article 56

  • Legal definition
  • State of the art
  • Obvious
  • Problem-solution approach – identifying the nearest/closest prior art
  • Formulating the objective technical problem
  • Does the claimed subject matter solve the objective problem?
  • Partial problems
  • Aggregation/juxtaposition
  • Mix of technical and non-technical features
  • Deciding on inventive step and positive pointers

PRACTICAL WORKSHOP: Exercises to exemplify the concepts learnt

Latest case law and its implications for defending your EPO patent applications

  • Notable decisions on inventive step

Enrol now

The Effective Defence of EPO Patent Applications course will cover:

Understanding the implications of clarity of claims – Article 84

  • Definition of clarity – Art 84
  • Categories and types of claims
  • Practical definition of clarity – clear means
  • Conciseness and support by description
  • Form and content of claims
  • Clarity vs novelty
  • Structural vs functional features
  • Comprising vs consisting
  • The interplay between Art 83, 84 and 56
  • Relative terms
  • Inventions defined by parameters
  • Definition by result to be achieved
  • Sources of difficulties with Article 84 – illustrating case law
  • Clarity of claims in opposition procedure
  • Application of G 3/14 to amended claims
  • Adaptation of the description

PRACTICAL WORKSHOP: Exercises to exemplify the concepts learnt

Inventive step and how to master the problem-solution approach – Article 56

  • Legal definition
  • State of the art
  • Obvious
  • Problem-solution approach – identifying the nearest/closest prior art
  • Formulating the objective technical problem
  • Does the claimed subject matter solve the objective problem?
  • Partial problems
  • Aggregation/juxtaposition
  • Mix of technical and non-technical features
  • Deciding on inventive step and positive pointers

PRACTICAL WORKSHOP: Exercises to exemplify the concepts learnt

Latest case law and its implications for defending your EPO patent applications

  • Notable decisions on inventive step

Enrol now

Daniel X Thomas

Daniel X. Thomas is an electronics engineer by training. He started his career in the patent field as search examiner at the former Institut International des Brevets in The Hague in 1971. After incorporation of the IIB into the EPO in 1978, he was search examiner in the EPO’s DG1. He joined the EPO’s DG2 in 1979 as substantive examiner in the field of computers and memories. He became a Director in DG2 in 1989, and subsequently headed directorates in various fields of electronics, physics and mechanics.

Although he retired from active service at the EPO on 1 January 2013, Daniel continues to be active in the field of training patent specialists. He still regularly gives lectures at different universities over Europe, including CEIPI in Strasbourg, and also leads workshops/seminars relating to various aspects of the European granting procedure for the epi and the Academy of the EPO, including preparation of candidates for the European Qualification Examination, and also ‘grandfathers’ for new Contracting States.

More details

Book Effective Defence of EPO Patent Applications Live online training

29 Nov 2021

Live online

09:00-17:30 UK (London) (UTC+00)
10:00-18:30 Paris (UTC+01)
04:00-12:30 New York (UTC-05)
Course code 11107

  • GBP 499 599
  • EUR 719 859
  • USD 814 970

Until 25 Oct

In your basket 

11 May 2022

Live online

08:30-17:30 UK (London) (UTC+01)
09:30-18:30 Paris (UTC+02)
03:30-12:30 New York (UTC-04)
Course code 11865

  • GBP 499 599
  • EUR 719 859
  • USD 814 970

Until 06 Apr

In your basket 

11 Nov 2022

Live online

08:30-17:30 UK (London) (UTC+00)
09:30-18:30 Paris (UTC+01)
03:30-12:30 New York (UTC-05)
Course code 11758

  • GBP 499 599
  • EUR 719 859
  • USD 814 970

Until 07 Oct

In your basket 

Reviews of IPI's Effective Defence of EPO Patent Applications training course


A very good and practical course.

Jun 13 2019

Rafi Bronstein
Patent Attorney, Daltan Consulting Ltd

Nov 15 2017

The speaker was perfect.

Agneszka Zebrowska-Kucharzyk
European and Polish Patent Attorney, PATPOL

Nov 24 2016

It was a great course!

Geovana Rosales
Patent Manager, DuPont Nutrition Biosciences ApS

Nov 24 2016

A lively discussion and I particularly liked the case law exercises.

Huaizhou SHI
NLO

Nov 24 2016

A very experienced speaker – straightforward and at times funny.

Guy Knockaert
Umicore

Denmark

  • Budde Schou
  • DuPont Nutrition Biosciences ApS
  • Guardian IP Consulting
  • Novo Nordisk A/S

Switzerland

  • AC Immune
  • F. Hoffmann-La Roche Ltd
  • JTI

UK

  • Baytree IP Ltd
  • Xaar Plc
  • Xeros Limited

Belgium

  • Umicore
  • VIB

Finland

  • Kolster OY AB
  • Primrose Oy

Netherlands

  • IZI Patents
  • NLO

Norway

  • JOTUN A/S
  • Yara International ASA

Poland

  • EP-Patent
  • PATPOL

Sweden

  • Alfa Laval Corporate AB
  • Bergenstråhle & Partners ​AB

Canada

  • BCF

India

  • Mettler Toledo India (GBSI)

Israel

  • Daltan Consulting Ltd

Italy

  • GLP SRL

Spain

  • ZBM PATENTS

Enrol now

Multiple colleagues?
Talk to one of our training experts to discuss how to:

Run this course conveniently and cost-effectively in-house for your staff and colleagues

Aleksandra BEER
Training expert

+44 (0)20 7749 4749

inhouse@ipi.academy